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Biography

Paul is an accomplished litigator and registered patent attorney who concentrates his practice on IP litigation. He has extensive experience representing clients in federal court litigation involving patents, trademarks, copyrights, and trade secrets, as well as in adversarial and post-grant proceedings at the U.S. Patent and Trademark Office involving patents and trademarks. He also has experience with actions at the U.S. International Trade Commission and preparing appeals to the U.S. Court of Appeals for the Federal Circuit.

In addition to his substantial litigation experience, Paul prepares legal analyses and opinions and provides consultation on a broad range of intellectual property issues such as freedom to operate and patent validity. He has also assisted litigants as local counsel in intellectual property cases pending before the Southern District of Ohio.

Outside of his practice, Paul serves as Vice Chair of the Cincinnati Bar Association’s Intellectual Property Litigation Committee where he helps lead quarterly meetings and provides annual updates regarding recent developments in intellectual property law. He also serves as an adjunct faculty member at the University of Cincinnati College of Law where he teaches a course on what it is like to be a new associate practicing intellectual property law and helps students learn how to navigate the ins and outs of being a newly practicing IP attorney.

Other Info About Paul

Experience

Legal Work Highlights

Gaymar Industries, Inc. v. Cincinnati Sub-Zero Products, Inc., W.D. New York, Case No. 1:08-cv-299. Successfully defended against preliminary injunction motion and prosecuted inter partes reexamination resulting in cancellation of all 134 claims of plaintiff’s patent-in-suit on behalf of accused infringer medical device manufacturer.

Red Carpet Studios v. Midwest Trading Group, Inc. et al., S.D. Ohio, Case Nos. 1:12-cv-501; 1:15-cv-524. Prevailed at summary judgment regarding design patent infringement claim and all pleaded defenses on behalf of owner of design patent for “Kinetic Sculpture”.

Ashland Licensing & Intellectual Property, et al. v. Sunpoint International Group USA Corp., TTAB, Cancellation No. 92057294. Successfully cancelled two of competitor’s registrations for automotive lubricants after full trial period and oral hearing before the Trademark Trial and Appeal Board.

Ashland Inc. v. Specialty Lube, Inc., S.D. Illinois, Case No. 3:13-cv-0095. Represented owner of trademark for automotive lubricants in infringement and counterfeiting case successfully achieving consent judgment against accused infringer.

AXS Group, LLC v. LISNR, Inc., C.D. California, Case No. 2:17-cv-8413. Prevailed on motion to dismiss at the pleading stage on behalf of accused infringer ultrasonic data-over-sound developer.

Standard Textile Co., Inc. v. J&R United Industries, Inc., S.D. Florida, Case No. 0:17-cv-61815. Represented patent owner textile manufacturer in patent infringement case against competitor successfully rebutting each indefiniteness challenge at claim construction and achieving favorable settlement.

Way.com v. OneStopParking.com, LLC, N.D. California, Case No. 3:18-cv-4819. Successfully defended against preliminary injunction motion and achieved favorable settlement for defendant online parking reservation company in federal trade secret case.

In re Muthanandam, Pat. Appl. No. 13/671,342, U.S. Pat. No. 10,612,174. Represented textile manufacturer in appeal to the Patent Trial and Appeal Board and post-appeal prosecution, successfully achieving significant issued patent.

Helmer v. Beasley, Allen, Crow, Methvin, Portis & Miles, P.C., S.D. Ohio, Case No. 1:20-cv-105. Achieved favorable settlement on behalf of the author of the seminal legal treatise on False Claims Act law in a copyright infringement suit brought against a law firm accused of infringing the author’s copyrighted treatise.

Tommy’s Destiny, Inc. et al. v. Fury Asian Foods, Inc., E.D. Kentucky, Case No. 2:22-cv-00087. Successfully enforced client’s trademark rights against newcomer restaurant attempting to enter the market under a confusingly similar name.

Education

Law School

Northern Kentucky University Salmon P. Chase College of Law, J.D., 2008, cum laude

Graduate School

John Jay College, M.A., Forensic Psychology, 2004

Undergraduate School

Xavier University, B.S., Applied Physics, 1995

Bar Memberships

Paul is licensed to practice in the following state(s):

Ohio

Courts

Paul is admitted to practice before the following court(s):

Supreme Court of the United States

United States Patent & Trademark Office

U.S. Court of Appeals, Federal Circuit

U.S. Court of Appeals, Sixth Circuit

U.S. District Court, Southern District of Ohio

U.S. District Court, Northern District of Ohio

 

Recognition

Local & National Recognition

The Best Lawyers in America®, Litigation – Intellectual Property & Patent, 2022-2023

Ohio Super Lawyers®, 2023

Cincy Magazine, Cincy Leading Lawyer, Intellectual Property Litigation, 2021 – 2023

Ohio Rising Stars®, 2015-2018

Cincinnati Bar Association, Ingenuity Award, 2015

 

Professional Affiliations

Professional Affiliations & Memberships

Cincinnati Bar Association, IP Litigation Committee, Vice Chair

Cincinnati Intellectual Property Law Association

Federal Circuit Bar Association

Northern Kentucky Law Review

Presentations

Paul was invited to speak at the following events:

Eighth Annual Supreme Court Roundup, Cincinnati Bar Association IP Litigation Committee, August 2021

Seventh Annual Supreme Court Roundup, Cincinnati Bar Association IP Litigation Committee, September 2020

Sixth Annual Supreme Court Roundup, Cincinnati Bar Association IP Litigation Committee, September 2019

Fifth Annual Supreme Court Roundup (and a Couple Federal Circuit Cases), Cincinnati Bar Association IP Litigation Committee, June 2018

Fourth Annual Supreme Court Roundup, Cincinnati Bar Association IP Litigation Committee, August 2017

Third Annual Supreme Court Roundup and Other Interesting Cases, Cincinnati Bar Association IP Litigation Committee, August 2016

Second Annual Supreme Court Roundup: 5 Cases in One Term, Cincinnati Bar Association IP Litigation Committee, August 2015

Supreme Court Roundup: 10 Cases in One Term, Cincinnati Bar Association IP Litigation Committee, July 2014

E-Discovery: Protect Your Client and Yourself, Cincinnati Bar Association IP Litigation Committee, April 2010

Major Publications

Paul is an author or contributor to the following publications:

Author: “Cancer Research v. Barr Laboratories: The Federal Circuit Unreasonably Delays a Clear Directive on the Doctrine of Prosecution Laches,” Ohio State Bar Association IP Section Online Newsletter, Spring 2011

Author: “State v. Troisi: Registration Required in Trademark Counterfeiting Prosecution”, Ohio State Bar Association IP Section Online Newsletter, Summer 2010